DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Election/Restrictions
Applicants’ election without traverse of Group I (claims 1-15) in the reply filed on July 8, 2026 is acknowledged. Claims 16-19 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 4 and 12 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Regarding claim 4, the limitation “of a combined amount of polymers A and B” should be added to the claim to give it a basis.
Regarding claim 12, please delete the limitation following the phrase “preferably from”.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claim(s) 1-3, 6, 8, 9, 10 and 14 is/are rejected under 35 U.S.C. 102(a)(i) as being anticipated by Lu et al (US 5,776,604).
Regarding claims 1, 6, 8, 9, 10 and 14, Lu teaches an aqueous coating composition comprising (Example 1):
38 % by weight of an ethylene-acrylic acid copolymer which reads on polymer A
5.9 % by weight of an acrylic polymer which reads on polymer B
15.6% by weight of a calcium carbonate which is 100% calcium carbonate
It is noted that the wax is not mandatorily present.
Regarding claim 2-3, the ratio of polymer A to polymer B is 38:5.9 or 6.44:1 which is within the recited range.
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
Claim(s) 1-12 and 14-15 is/are rejected under 35 U.S.C. 103 as being unpatentable over Lu et al (US 5,776,604).
Regarding claims 1-8, 10 and 14, Lu teaches an aqueous (col. 5, lines 35-40) coating composition (col. 4, lines 50-55) comprising: from 20 to 80 % by weight of a binder composition (col. 3, lines 5-15) which is a mixture of an acrylic polymer (which reads on polymer B) and ethylene-acrylic polymer (which reads on polymer A). The ratio of the amount of A:B is 95:5 to 50:50 (col. 3) which reads on the claimed ratio. The composition also a particulate additive in the amount from 20 to 80 % (col. 3, lines 30-40) of which 5 to 70% (col. 3, lines 65-67) can be calcium carbonate (col. 3, lines 55-60). This means that the amount of calcium carbonate can be calculated to range from 1 to 56 % by weight. It is noted that the wax is optional.
Lu fails to specifically exemplify the recited coating. However, Lu discloses each of the components of the composition and teaches that they are all suitable for use in the coating composition. It is within the ordinary level of skill in the art to make any of the compositions suggested by a reference, including selecting materials from a list in a reference. Therefore, a person of ordinary skill would have been motivated to prepare any of the compositions suggested by Lu, including the claimed composition. In view of this, it would have been obvious to a person of ordinary skill in the art at the time of the present invention to use the teachings of Lu to arrive at the presently claimed invention. It would have been nothing more than using known components in a typical manner to achieve predictable results. KSR v. Teleflex, 550 U.S. 418, 82 USPQ2d 1385 (2007).
Regarding claims 9 and 11, Lu teaches that polymer B is an acrylic polymer which contains acrylic acid or methacrylic acid monomers (col. 2, lines 35-50) as well as C1-C16 alkyl acrylate (col. 2, lines 35-45).
Regarding claim 12, Lu teaches that the ethylene acrylic acid copolymer can have 15 % acrylic acid (col. 2, lines 60-65).
Regarding claim 15, Lu teaches that the aqueous coating composition has a solids content that ranges from 10 to 80 % (col. 5, lines 30-40).
Claim(s) 13 is/are rejected under 35 U.S.C. 103 as being unpatentable over Lu et al (US 5,776,604) in view of Buri et al (US 2015/0315366)
The discussion regarding Lu in paragraph 8 above is incorporated here by reference.
Regarding claim 13, Lu teaches that the calcium carbonate have particle sizes rarely smaller than 1 micron (col. 3, lines 50-60). However, Lu fails to explicitly teach that the calcium carbonate has a weight-median particle size d50 of 0.1 to 15 microns.
Buri teaches an aqueous coating material (Abstract) which contains calcium carbonate with a weight-median particle size d50 from 0.1 to 50 microns ([0055]).
It would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to have the calcium carbonate of Lu have the weight median particle size as taught by Buri. One would have been motivated to do so in order to receive the expected benefit of having a coating with good mechanical properties (Buri, [0172]).
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1-5, 7-12 and 14-15 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 and 3-14 of copending Application No. 18/566,377 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because they both teach an aqueous coating composition with the same polymer A and polymer B and a calcium carbonate.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DORIS L LEE whose telephone number is (571)270-3872. The examiner can normally be reached M-F 8 am - 5 pm.
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DORIS L. LEE
Primary Examiner
Art Unit 1764
/DORIS L LEE/Primary Examiner, Art Unit 1764
Prosecution Insights